Mechanical Resonator With Low Level of Symmetry for the Measurement of the Mass of Individual Particles
DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/24/2025 is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such a claim limitation is: “a measuring device connected to the resonator element and configured to measure one or more oscillation modes” in claim 3.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 3 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Claim 3 asserts a measuring device… configured to measure one or more oscillation modes. Applicant, in the disclosure, has not identified elements used to construct an embodiment capable of measuring oscillation modes.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim limitation “a measuring device… configured to measure one or more oscillation modes” invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The examiner has failed to find any structure in the disclosure that performs the function in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Payandehpeyman (ACS Applied Nano Materials, " "Detection of SARS-CoV-2", 2021, "Payandehpeyman").
Regarding claim 1, Payandehpeyman discloses, in figures 1-9, a mechanical resonator (ABSTRACT, “nanomechanical sensors’) that comprises: a resonator element (ABSTRACT, Payandehpeyman’s graphene sheet is a nanoresonator), being a rectangular membrane (p. 6192, examiner notes the SLGS is modeled as a sheet, p. 6193, the aspect ratio uses length and width, p. 6196, Payandehpeyman represents the SLGS as a rectangle) the of length Lx, width Ly and thickness h (p. 6190, col. 2, ¶ 1, Payandehpeyman’s sheet has equivalent thickness, p. 6193, col 1, thickness = 0.345 nm), wherein width Ly is a shorter characteristic dimension (p. 6193, Payandehpeyman’s aspect ratio varies between shorter width and shorter length, 0.2-5), being made of an elastic material and adapted for sustaining at least one oscillation mode (see fig. 7), and a clamping structure supporting the resonator element (examiner asserts a clamping structure supporting Payandehpeyman’s single layer graphene sheet is inherent, examiner notes fig. 7 depicts the CCCC mode where all edges of the sheet are adhered to a surface), wherein: all edges of the resonator element are anchored to the clamping structure (see previous comment), the thickness h of the resonator element is less than or equal to 0.1 times the width Ly (p. 6193, Payandehpeyman’s width is 5-100 mm and the thickness = 0.345 nm), and an aspect ratio of the resonator element is comprised between 1.01 and 10 (p. 6193, Payandehpeyman’s aspect ratio is 0.2-5).
Examiner notes that the limitation: “for the measurement of the mass of individual particles” is an intended use type statement. Applicant is reminded that a claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114.
Regarding claim 2, Payandehpeyman discloses, in figures 1-9, the aspect ratio of the resonator element is between 1.01 and 1.5 (p. 6193, Payandehpeyman’s aspect ratio is 0.2-5).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Payandehpeyman (ACS Applied Nano Materials, " "Detection of SARS-CoV-2", 2021, "Payandehpeyman"), in view of Cubukcu (US 20160123973; “Cubukcu”).
Regarding claim 3, Payandehpeyman fails to disclose a measuring device connected to the resonator configured to measure oscillation modes.
Cubukcu teaches, in figures 1-4, a measuring device connected to the resonator element and configured to measure one or more oscillation modes (¶ 0031 & ¶ 0047, Cubukcu sensing plasmonic resonance via standard optical spectroscopy).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate Cubukcu’s scheme of using optical spectroscopy into Payandehpeyman’s scheme measuring oscillation modes of a nano resonator since it is well known to combine prior art elements according to known methods to yield predictable results. Doing so provides a reliable way of measuring mechanical resonance modes.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Payandehpeyman (ACS Applied Nano Materials, " "Detection of SARS-CoV-2", 2021, "Payandehpeyman"), in view of Martinez (Applied Physics, "Effect of particle adsorption …", 2020; "Martinez").
Regarding claim 4, Payandehpeyman discloses, in figures 1-9, a method for measurement of mass of individual particles with a mechanical resonator (ABSTRACT, “nanomechanical sensors’), that comprises the steps of: selecting a resonator element made of an elastic material (ABSTRACT, “single layer graphene sheet”) and adapted for sustaining at least one oscillation mode (see fig. 7), wherein: the resonator element (ABSTRACT, Payandehpeyman’s graphene sheet is a nanoresonator) is a rectangular membrane (p. 6192, examiner notes the SLGS is modeled as a sheet, p. 6193, the aspect ratio uses length and width, p. 6196, Payandehpeyman represents the SLGS as a rectangle) of length Lx, width Ly and thickness h (p. 6190, col. 2, ¶ 1, Payandehpeyman’s sheet has equivalent thickness, p. 6193, col 1, thickness = 0.345 nm), wherein width Ly is a shorter characteristic dimension (p. 6193, Payandehpeyman’s aspect ratio varies between shorter width and shorter length, 0.2-5), the thickness h of the resonator element is less than or equal to 0.1 times the width Ly (p. 6193, Payandehpeyman’s width is 5-100 mm and the thickness = 0.345 nm), and an aspect ratio of the resonator element is between 1.01 and 10 (p. 6193, Payandehpeyman’s aspect ratio is 0.2-5) anchoring all edges of the resonator element to a clamping structure (examiner asserts a clamping structure supporting Payandehpeyman’s single layer graphene sheet is inherent, examiner notes fig. 7 depicts the CCCC mode where all edges of the sheet are adhered to a surface), arranging on the resonator element a particle whose mass is to be measured (ABSTRACT, “SARS-CoV-2 viruses were randomly distributed on the SLGS”), measuring frequency shifts of the resonator element caused by the particle arranged (ABSTRACT, “frequency shift and relative frequency shift were evaluated”).
Payandehpeyman fails to explicitly calculate mass.
Martinez teaches calculating the mass of the particle (ABSTRACT, Martinez utilizes nano-resonators to measure mass of single particles) arranged, ma, by applying the following equation (p. 3, see Martinez’s general expression for relative frequency shift due to adsorption of the particle, equation 13, examiner notes Martinez may determine Ma from the expression):
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where M is a mass of the resonator element, X0 and Y0 are normalized coordinates of a position of the particle on the resonator element and ψ is a mode shape associated to a vibration frequency f (p. 2, col. 2, equation 6, Ma is the mass of the particle and x0, y0 are the coordinates).
Regarding claim 5, Payandehpeyman and Martinez discloses, in Payandehpeyman’s figures 1-9, the aspect ratio of the resonator element is between 1.01 and 1.5 (p. 6193, Payandehpeyman’s aspect ratio is 0.2-5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY P GRAVES whose telephone number is (469)295-9072. The examiner can normally be reached M-F 8 a.m. - 5 p.m..
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY P GRAVES/Primary Examiner, Art Unit 2855
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